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Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772

United States Court of Appeals for the Federal Circuit

February 9, 2005, Decided

04-1042

Opinion

 [***1691]   [*1370]  RADER, Circuit Judge:

Palm Bay Imports, Inc. (Palm Bay) appeals from the decision of the United States Patent and Trademark Office Trademark Trial and Appeal Board (Board) refusing registration of the mark Veuve Royale for sparkling wine on the ground of likelihood of confusion with three of opposer Veuve Clicquot Ponsardin's (VCP's) marks. Veuve Clicquot Ponsardin v. Palm Bay Imps., Inc., 2003 TTAB LEXIS 388, Opp'n No. 115,438, 2000 WL 21953664 (T. T.A.B. Aug. 4, 2003). This court concludes that the Board did not err in finding a likelihood of confusion, but substantial evidence does not support such a finding [**2]  for one of the marks. Even though this court reverses the Board's conclusion as to one of the marks, the Board's refusal to register Palm Bay's VEUVE ROYALE mark is affirmed.

In April 1998, Palm Bay filed an intent-to-use trademark application under Section 1(b) of the Lanham Act, 15 U.S.C. § 1051(b), for the mark Veuve Royale for "alcoholic beverages, namely, sparkling wine." Veuve Clicquot Ponsardin, 2003 TTAB LEXIS 388 at *6-7. The examining attorney found no evidence of a similar mark that would bar registration on the ground of likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). In response to the June 22, 1999 Official Gazette publication of Palm Bay's application, VCP filed an opposition with the Board, alleging a likelihood of confusion between Veuve Royale and five of its own marks. Specifically, VCP asserted a likelihood of confusion based on the following  [*1371]  marks: (1) Veuve Clicquot Ponsardin; (2) Veuve Clicquot; (3) Veuve Clicquot Ponsardin Design; (4) The Widow; and (5) LA Viuda.

On August 4, 2003, the Board refused registration of VEUVE ROYALE, finding a likelihood of confusion with (1) VEUVE CLICQUOT PONSARDIN  [**3]  , (2) VEUVE CLICQUOT, and (3) THE WIDOW. The Board dismissed VCP's Section 2(d) claim for La Viuda finding the doctrine of foreign equivalents inapplicable to marks in two different foreign languages, i. e., Spanish and French. Palm Bay appeals.

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396 F.3d 1369 *; 2005 U.S. App. LEXIS 2020 **; 73 U.S.P.Q.2D (BNA) 1689 ***

PALM BAY IMPORTS, INC., Appellant, v. Veuve Clicquot Ponsardin MAISON FONDEE EN 1772, Appellee.

Prior History:  [**1]  Appealed from: United States Patent and Trademark Office Trademark Trial and Appeal Board. (Opposition No. 115,438).

Veuve Clicquot Ponsardin v. Palm Bay Imps., Inc., 2003 TTAB LEXIS 388 (Trademark Trial & App. Bd., Aug. 4, 2003)

Disposition: Affirmed in part and reversed in part.

CORE TERMS

marks, CLICQUOT, fame, likelihood of confusion, purchasers, Trademarks, champagne, sparkling wine, impression, third-party, consumers, Beverage, similarity, products, wine, translate, famous, appearance, consuming public, customers, purposes, factors, alcoholic, magazines, argues, brands

Business & Corporate Compliance, Registration Procedures, Federal Registration, Principal Register, Trademark Law, Consumer Confusion, Circuit Court Factors, Federal Circuit Court, Likelihood of Confusion, General Overview, Unfair Competition, Federal Unfair Competition Law, Factors for Determining Confusion, Similarity of Marks, Appearance, Meaning & Sound, Civil Procedure, Justiciability, Standing, Third Party Standing, Causes of Action Involving Trademarks, Infringement Actions, Dilution of Famous Marks, Factors for Determining Dilution, US Trademark Trial & Appeal Board Proceedings, Oppositions, Entertainment Industry Falsity & Performance Misattribution, Trade Dress Protection, Causes of Action, Federal Trademark Dilution Act, Conveyances, Foreign & International Protection, Meaning